Mattel, Inc. v. Nerdesin
Claim Number: FA1008001339300
Complainant is Mattel,
Inc. (“Complainant”), represented by Robyn
S. Lederman, of Cantor Colburn LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <barbieoyunlari.org>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 5, 2010.
On August 6, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <barbieoyunlari.org> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 17, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@barbieoyunlari.org by e-mail. Also on August 17, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 16, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <barbieoyunlari.org> domain name is confusingly similar to Complainant’s BARBIE mark.
2. Respondent does not have any rights or legitimate interests in the <barbieoyunlari.org> domain name.
3. Respondent registered and used the <barbieoyunlari.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mattel, Inc., owns multiple trademarks for its BARBIE mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 728,811 issued March 20, 1962) in connection with dolls and doll accessories.
Respondent, Nerdesin, registered the disputed domain name on May 27, 2008. The disputed domain name resolves to a website featuring links to games and puzzles unrelated to Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts rights in its BARBIE mark based on its holding of multiple trademark registrations for the mark with the USPTO (e.g. Reg. No. 728,811 issued March 20, 1962). The Panel finds that Complainant’s longstanding registration of its BARBIE mark with the USPTO is conclusive evidence of Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). The Panel also finds that Complainant need not register its mark in the country where Respondent resides or operates. See
Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant asserts that Respondent’s <barbieoyunlari.org>
domain name is confusingly similar
to its BARBIE mark. Respondent’s
disputed domain name contains Complainant’s entire mark and adds the generic
term “oyunlari” which Complainant indicates means “game” in Turkish. The disputed domain name also adds the
generic top-level domain “.org.” The
Panel finds that the addition of a generic term is not sufficient to
distinguish the disputed domain name from Complainant’s mark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb.
Forum Sept. 21, 2004) (finding that the addition of the generic term
“collection” to Complainant’s HARRY POTTER mark failed to distinguish the
domain name from the mark). The Panel
also finds that the addition of a gTLD is irrelevant in Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum
Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is
irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that that Respondent’s <barbieoyunlari.org>
domain name is confusingly similar
to its BARBIE mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that
Respondent lacks rights and legitimate interests in the disputed domain
name. Complainant must first make a prima facie case in support of its
allegations, then the burden shifts to Respondent to prove it has rights or
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel
finds that based on the arguments in the Complaint, Complainant has established
a prima facie case in support of its
contentions and Respondent has failed to submit a Response to these
proceedings. However, the Panel will
examine the record to determine whether Respondent owns any legitimate rights
or interests under Policy ¶ 4(c). See Towmaster, Inc. v.
Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must
first make a prima facie case that Respondent lacks rights and legitimate
interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the
burden shifts to Respondent to show it does have rights or legitimate
interests.”); see also F.
Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii)
of the Policy shows that the burden of proof shifts from the Complainant to the
Respondent once the Complainant has made out a prima facie case that the
Respondent has no rights or interests in the domain names.”).
Complainant asserts that there is no relationship between Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use the disputed domain name. The WHOIS information for the disputed domain name indicates the registrant is “Nerdesin.” The Panel finds that the combination of the WHOIS information and Complainant’s assertions indicate that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s <barbieoyunlari.org> domain name was registered on May 27, 2008. The disputed domain name resolves to a website featuring links to games and puzzles unrelated to Complainant. The Panel presumes that Respondent profits from the displayed links. The Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the disputed domain name to profit from the displayed links to games and puzzles unrelated to Complainant by intentionally attempting to attract Internet users who seek Complainant’s products is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <barbieoyunlari.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 23, 2010
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